Steven M. Rafferty et al.

Patent Trials and Appeals Board

Jul 25, 2019

13106641 - (D) (P.T.A.B. Jul. 25, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/106,641 05/12/2011 Steven M. Rafferty ACTI01-00002 5736
23990 7590 07/25/2019
DOCKET CLERK
P.O. DRAWER 800889
DALLAS, TX 75380
EXAMINER
SHANKER, JULIE MEYERS
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07/25/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
munckwilson@gmail.com
patents@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN M. RAFFERTY, RICKIE N. BENAVIDEZ,
ALEXANDER K. WOLFE, and MICHAEL SHAPIRO
____________

Appeal 2018-006077
Application 13/106,6411
Technology Center 3600
____________

Before JAMES R. HUGHES, CATHERINE SHIANG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 6–10 and 16–30, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify ActiveProspect, Inc. as the real party in interest. App.
Br. 2.

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STATEMENT OF THE CASE
Introduction
The present invention relates to “communication systems, and more
specifically, to a system and method for verifying a lead that was collected
from a website.” Spec. ¶ 1. Claim 6 is exemplary:
6. A method comprising:
receiving a first request at a lead verification server from
a web browser in response to the web browser visiting a web
page of a lead generating website and executing a lead
verification service script, the lead generating website
configured to collect lead data for a lead generator;
responding to the first request at the lead verification
server by sending a reference key to the web browser;
collecting information about the lead generating website
and information associated with a user of the web browser;
associating the collected information with the reference
key;
receiving, from an interested third party that is separate
from the lead generating website and the lead generator after
the interested third party receives the lead data and the
reference key from the lead generator, a second request for
verification of the lead data, the second request including the
reference key; and
in response to the second request, sending at least some
of the collected information to the interested third party.

References and Rejections2
Claims 6–10 and 16–30 are rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2–6.

2 Throughout this opinion, we refer to the (1) Final Office Action dated Aug.
4, 2016 (“Final Act.”); (2) Appeal Brief dated Feb. 28, 2017 (“App. Br.”);
(3) Examiner’s Answer dated Mar. 27, 2018 (“Ans.”); and (4) Reply Brief
dated May 24, 2018 (“Reply Br.”).
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Claims 6–10 and 16–30 are rejected under 35 U.S.C. § 103 as being
obvious over Ganguly (US 2009/0164477 A1, published June 25, 2009) and
Vanjani (US 2006/0165260 A1, published July 27, 2006). Final Act. 7–11.

ANALYSIS
35 U.S.C. § 101
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention that the Examiner erred in this case.
Section 101 of the Patent Act provides “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation
omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
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in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
guidance set forth in the Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th Ed., Rev.
08.2017, 2018) (Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56.
Turning to Guidance Step 2A, Prong 1 (Alice step one), we agree with
Appellants that the Examiner has failed to identify a patent-ineligible
abstract idea. See App. Br. 9–31; Reply Br. 2–18. The Federal Circuit
explains the “directed to” inquiry looks at the claims’ “character as a
whole,” and is not simply asking whether the claims involve a patent-
ineligible concept:
The “directed to” inquiry [ ] cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”). Rather, the “directed to”
inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether “their character as a
whole is directed to excluded subject matter.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see
also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’
claimed process for patent protection under § 101, their claims must be
considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a
whole “focus on a specific means or method that improves the relevant
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technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery”).
Considering the claims as a whole, we determine each of claims 6–10
and 16–30 is directed to a method (or system) of verifying a lead collected
from a website by receiving a request at a lead verification server from a
web browser in response to the web browser visiting a web page of a lead
generating website and executing a lead verification service script;
responding to the request at the lead verification server by sending a
reference key to the web browser; collecting information about the lead
generating website and information associated with a user of the web
browser; associating the collected information with the reference key;
receiving, from an interested third party a request for verifying the lead data;
and in response to that request, sending at least some of the collected
information to the interested third party [“invented method (or system) of
verifying a lead collected from a website”]. See claims 6–10 and 16–30.
Our determination is supported by the Specification, which describes the
prior art problem of not being able to reliably verify when and where an
Internet lead was collected by a lead seller, and the resulting need for the
invented method (or system) of verifying a lead collected from a website.
See Spec. ¶¶ 1–8.
In light of the Guidance, because the invented method (or system) of
verifying a lead collected from a website is not a mathematical concept, an
identified method of organizing human activity, or a mental process, we
conclude the claims are not directed to an abstract idea. See Guidance, 84
Fed. Reg. at 52; id. at 53 (“Claims that do not recite matter that falls within
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these enumerated groupings of abstract ideas should not be treated as
reciting abstract ideas, except” in rare circumstances.).
In particular, the invented method (or system) of verifying a lead
collected from a website is not a mathematical concept, because it is not a
mathematical relationship, mathematical formula or equation, or
mathematical calculation. See Guidance, 84 Fed. Reg. at 52. Further, it is
not an identified method of organizing human activity, as it is not (i) a
fundamental economic principle or practice (including hedging, insurance,
mitigating risk), (ii) a commercial or legal interaction (including agreements
in the form of contracts; legal obligations; advertising, marketing or sales
activities or behaviors; business relations), or (iii) managing personal
behavior or relationships or interactions between people (including social
activities, teaching, and following rules or instructions). See Guidance, 84
Fed. Reg. at 52. In addition, the invented method (or system) of verifying a
lead collected from a website is not a mental process, as it is not a concept
performed in the human mind (including an observation, evaluation,
judgment, opinion). See Guidance, 84 Fed. Reg. at 52.
Because the claims are not directed to an abstract idea, we do not
sustain the Examiner’s rejection of claims 6–10 and 16–30 under 35 U.S.C.
§ 101.

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35 U.S.C. § 1033
We have reviewed the Examiner’s rejections in light of Appellants’
contentions and evidence of record. We concur with Appellants’ contention
that the Examiner erred in finding the cited portions of Ganguly teach
“receiving, from an interested third party . . . a second request for
verification of the lead data . . . ; and in response to the second request,
sending at least some of the collected information to the interested third
party,” as recited in independent claim 6 (emphasis added). See App. Br.
35–38; Reply Br. 18–21.
The Examiner cites Ganguly’s paragraphs 8 and 19 for teaching the
above claim limitation. See Final Act. 8–9; Ans. 11. We have reviewed the
cited Ganguly portions, and they do not describe “in response to the second
request, sending at least some of the collected information to the interested
third party” as required by claim 6. In particular, while the cited Ganguly
portions describe transmitting data to another party (Ganguly ¶¶ 8, 19), they
do not describe such transmission is “in response to the second query,” as
required by claim 6.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of claim 6.
Each of independent claims 16, 23, and 29 recites a similar claim
limitation, and the Examiner applies the same findings discussed above with
respect to that claim limitation. See claims 16, 23, and 29; Final Act. 11.

3 Appellants raise additional arguments about the prior art rejection.
Because the identified issue is dispositive of the appeal, we do not need to
reach the additional arguments.

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Therefore, for similar reasons, we reverse the Examiner’s rejection of
independent claims 16, 23, and 29.
We also reverse the Examiner’s rejections of corresponding dependent
claims 7–10, 17–22, 24–28, and 30.

DECISION
We reverse the Examiner’s decision rejecting claims 6–10 and 16–30
under 35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 6–10 and 16–30
under 35 U.S.C. § 103.

REVERSED